Best practices in university invention management, 10

We have reached the last installment of our work with the ipHandbook’s model invention assignment agreement. We started this journey making note of how university patent administrators make things more complicated than they ever need to be. The basic approach is simple. Introduce cluelessness into a challenging situation to make it incomprehensible and unreasonable, and then make it all sound legal and authoritative, and then you have best practice.

We are into a list of things that in addition to assigning all future inventions within scope to the university, a faculty member or other unfortunate also agrees to do.

will not to disclose to UNIVERSITY or use in my work at UNIVERSITY (unless otherwise agreed in writing with UNIVERSITY):

(i) any proprietary information of any of my prior employers, or of any third party, such information to include, without limitation, any trade secrets or confidential information with respect to the business, work, or investigations of such prior employer or other third party; or

Meaning, apparently, that faculty coming from other universities cannot use any research work –the “investigations of such prior employer.” Or perhaps that means “documents investigated by the prior employer.” Yeah, maybe that. Notice that “proprietary information” ends up having a definition of the form “proprietary information and non-proprietary information.” Again, inducing hopeless cognitive dissonance. “Without limitation” just ices the cake’s icing. “Or other third party” is full bombast–is that “proprietary information of any of my prior employers or other third party” or is it “investigations of such prior employer or other third party”? Or do you care at all at this point? I don’t because the model IAA is just stupid, but on we go.

Either way, the IAA claim here reduces to a demand that faculty not use any proprietary information in their work at the university. Let that sink in. We are not talking merely about university-commissioned production of original works of authorship. We are talking all aspects of scholarship. No pre-publication access to research findings. No collaboration with faculty at other universities. The IAA here is so far afield it truly is bombast. It’s the dag wagging the dog. To make this whole crazy invention ownership scheme work, all a university has to do is repudiate being a university. Yeah. Owning inventions is more important than some cruddy university tradition of gathering a faculty to do what they do.

More:

(ii) any ideas, writings, or intellectual property of my own that are not included in Paragraph A, above, within the scope of this Agreement . . .

By the time everything is cross-referenced, you know it’s spaghetti coded. The architecture is flawed or deliberated obscured. The IAA now ventures to distinguish intellectual property (not defined, here) from ideas and writings–figure that out, given the definition of “Intellectual Property” used by the IAA. And what have we here? That a faculty member agrees not to disclose or to use any of his or her own ideas in work at the university. And there is no Paragraph A above.

At this point we descend into grammar hell, with little hope of return. Read:

will not use . . . any ideas . . . that are not included in Paragraph A, above, within the scope of this Agreement

It makes no sense. It fires all its guns at once and explodes into space. Is it, that one agrees not to use any of one’s own ideas unless those ideas are assigned to the university? Is the import of the IAA, then, that any idea one has is hereby assigned to the university, or the faculty member is in breach of the IAA and subject to a loss of “job security”? If not, then what? Crassness or incompetence. Is there any other option–ah, yes, there is–crassness *and* incompetence.

In the end, the IAA devolves into an extended parenthetical:

(please note that inventions previously conceived, even though a patent application has been filed or a patent issued, are subject to this Agreement if they are actually first reduced to practice under the circumstances included in Paragraph A above).

“Please” is a nice touch to add to a statement that purports to be one made by the compliant employee. The rest is bombast of the most crazy variety. The telltale sign of Bayh-Dole derangement syndrome is the “actually first reduced to practice” under the non-existent Paragraph A. Even if we take Paragraph A to mean the scope restricted in paragraph 1 (i), (ii), and (iii), we are left with the problematic claim that an invention may be made and a patent application filed (and the invention assigned) before a faculty member is appointed to the university, and the IAA claims that if that anyone–not just the inventor–first actually reduces that invention to practice at the university (in sponsored research, significant use of funds or facilities, and oh gawd work for hire), then the IAA assigns that invention to the university as well.

“Blistering blue barnacles,” as Captain Haddock would say in such a situation. Or perhaps “bloodsuckers!” In Bayh-Dole derangement syndrome, a university official lacks the ability to comprehend Bayh-Dole’s definition of a subject invention and therefore asserts that if an invention is “first actually reduced to practice” in a federally funded project, the university must own the invention or breach its federal contract. This is nonsense. The Supreme Court in Stanford v Roche made it all clear, even for such challenged university administrators. First the university must come to own an invention for there to be any possibility for the invention to be a “subject invention.” Furthermore, it must be an invention that is or may be patentable. Bayh-Dole is a part of federal patent law, after all. (Ignore the plant variety protection stuff–where “patentable” means “patentable or almost but not quite patentable”).

Only then, once a university already owns such an invention, does one look to determine whether the invention was made “in performance of work under a funding agreement.” If so, it’s a subject invention. But if an invention has already been assigned–such as before employment with the university–then it is simply not possible for the invention to become a subject invention, even if it is first “actually” reduced to practice at the university (in sponsored research or resulting from significant use of funds or facilities). The invention in such a case has already been reduced to practice–that’s the constructive reduction to practice that results from filing a patent application. “First actually reduced to practice” can have meaning only if an invention has not been reduced to practice at all–and therefore no patent application could possibly be filed (or at least accepted by the patent office).

Thus our fine parenthetical bites its own tail off making a claim that overreaches into nonsense. And we haven’t even got to the point that “conceived or first actually reduced to practice” are terms of art that apply to determining the priority of first to invent a patentable invention–that is, in the now obsolete patent “interference” to determine first to invent.

If an invention owned by a university contractor is determined to be patentable can also be established to have been made (“conceived”) in performance of work under a federal funding agreement (that is, there is documentary evidence that it was made within the scope of the funding agreement–see 37 CFR 401.1), then the invention is a subject invention that must be disclosed to the federal government.

Or, alternatively, if the “first actual reduction to practice” of the now patentable invention can be established to have been done under a federal funding agreement (again, there is documentary evidence that the funding agreement specified (“planned and committed”) such a reduction to practice or that reduction to practice distracted or diminished the planned and committed work), then the invention, even if not “conceived” under the funding agreement is still a subject invention.

In any case, even with NIST’s own Bayh-Dole derangement syndrome requiring contractors to require inventors to assign inventions that the contractors already own, Bayh-Dole requires the disclosure of subject inventions, not that inventors must assign to the university contractor all inventions they make with federal support. It’s easy. Does the university own an invention? Yes. Is it, or might it be, a patentable invention? Yes. Is there documentary evidence that this patentable invention was conceived or first actually reduced to practice under a funding agreement? If so, a subject invention–disclose it. Otherwise, it’s not a subject invention.

Nothing in Bayh-Dole requires a university to own any invention. Nothing in Bayh-Dole forces anyone to use the patent system. Nothing in Bayh-Dole requires inventors to assign inventions that they own, nor to file patent applications. That’s the point of the (f)(2) written agreement requirement, much as clueless NIST officials might argue otherwise.

Follow all that? Good–don’t apply for a job as a university patent administrator. You are overqualified and your skills would be wasted.

As it is, our model IAA’s parenthetical “please note” does much more. It expands the university claim of scope to any invention–regardless of whether that invention is a subject invention under Bayh-Dole–so long as there’s conception or first actual reduction to practice in at least one of the three ambiguously drafted paragraphs restricting scope. Doesn’t matter if that activity is done by the inventor so long as the inventor is also “employed” by the university or desires to remain employed, or took that $1.

Really, this IAA is a crock of best practices. The very sad thing is it is not far off from the reality of typical university invention ownership claims, other than for its own unique expression of bombast.

After the date hereof, this Agreement supersedes all previous agreements relating in whole or in part to the same or similar matters that I may have entered into with UNIVERSITY

That is, supplants university policy, anything in the appointment letter, whatever. What’s important here–gaining ownership of inventions however one may, or operating a university?

This Agreement may not be modified or terminated, in whole or in part, except in writing signed by an authorized representative of UNIVERSITY

The periods drop away from the sentences of the IAA. Here, deep into bombast, the university asserts that it can modify the IAA–but the faculty member cannot. One would expect in a reasonable agreement that both parties would have to agree to any modification. Not here. Not in the IAA’s “best practice” fascist fantasy land, where the holistic, caring university will provide for the compliant, effective worker eager to give his or her all for the sake of the efficient and beneficial operation of the university.

Some IAA signing apparatus and then this:

Note: This Agreement is completed and signed in triplicate and distributed in the following manner: original copy to the employee’s personnel file, second copy to the employee; third copy to the Technology Licensing Office.

Because, after all, it’s the Licensing Office that runs this university show, and its only concern is that it owns inventions. That’s best practice. The dag wags the dog.

And it is here, at the end, in the notes, that we see the origin of this awful article:

Editors’ Note: We are most grateful to the Association of University Technology Managers (AUTM) for having allowed us to update and edit this paper and include it as a chapter in this Handbook. The original paper was published in the AUTM Technology Transfer Practice Manual (Second Edition, Part VI: Chapter 1.2).